[197] The Court notes, however, that there is no case law stating clearly that one could not infringe by inducement or procurement unless it knew of the patent. Certainly even the case law referred to by Easton’s counsel does not require proof that the Defendant considered the patent valid and infringed. This would be an impossible burden to meet for a plaintiff. It would be easy for a defendant to find an obliging lawyer.

[198] Counsel for Bauer mentioned that this issue was argued before the Federal Court of Appeal in MacLennan above and that the Federal Court of Appeal, after reversing the trial judge on another issue, found the Defendant guilty of infringement by inducement and procurement without any evidence or mention of his knowledge of the Plaintiff’s patent. The Court has carefully reviewed all the previous decisions in that case and concludes that there is no finding in that respect in any of them.

[199] It is important to consider that inducing or procuring another to make or construct a patented invention is not a tort distinct from that of infringement. If it were, it could raise the jurisdictional issue alluded to by the Court in Diamond Shamrock Corp. v. Hooker Chemicals & Plastics Corp. (1982), 66 C.P.R. (2d) 145, at p. 157-158, 15 A.C.W.S. (2d) 440 (F.C.T.D.).

[200] There is thus no legal rationale for requiring an “intent to infringe” on the part of the inducer or procurer. On the other hand, it is easy to understand why it would be required that the inducement be done knowingly – deliberately. In effect, it would be unjust to find a party guilty of infringement by inducement if that party did not know that its actions would induce another to do something that would later be held to constitute infringement.

[201] One can easily imagine cases where steps taken by a party could be misunderstood by another or that actions could be done by mistake. For example, one could simply suggest a design in the course of a meeting leaving the decision as to the final conception of the skates in the hands of one’s supplier. In such a case, one may not know that the suggestion will induce the person actually responsible for the conception to take steps that will ultimately be found to infringe. A direction or suggestion could easily be misconstrued.

[202] If this had been the case Easton could argue that they did not know that their suggestion would result in the infringing skate boots made at Rock Forest.

[203] To accept that this kind of infringement must not only be done deliberately, but also with knowledge of the patent is to create an unwarranted and unjustifiable distinction between companies who manufacture their own products and those who choose to have them manufactured by others[125] according to their detailed specifications. In the latter cases, these specifications can only lead to actions that will later be found to infringe.

[204] Mr. Goldsmith said that Rock Forest was quite a unique company. Bauer goes further to say that not only was it unique, but it effectively became the manufacturing arm of Easton.[126] It is clear that there was much more here than a simple contract of supply or purchase agreement. The following passage from the examination in chief of Mr. Laferrière[127] leaves one to wonder:

Q. Okay. So you spoke about some of the things that you provided to Rock Forest; what, if anything, did Rock Forest provide to you?

A. Well, they provided the help I needed to —

THE COURT: Manpower?

THE WITNESS: Manpower, yes.

THE COURT: Anything else?

THE WITNESS: An office, that’s about it.

[205] This case is very different and can be easily distinguished from all those referred to by Easton’s counsel. This has nothing to do with one party procuring or inducing another to use a combination by procuring one component of the combination. Here, through Mr. Laferrière’s involvement (as well later as that of Mr. Daniel Chartrand),[128] Easton was actually participating in the making of the skates that are now found to infringe.

[206] As such, while it is not necessary to come to a conclusion in the case at bar, it is worth mentioning for future consideration that in England the courts applied the concept of infringement “by common design”, a notion that also exists in Canada although it has not been applied in the context of a patent infringement action. In Unilever plc v. Gillette (UK) Limited, [1989] R.P.C. 583 (U.K.C.A.) at p. 609, Lord Mustill, then at the Court of Appeal of England, noted:

I use the words “common design” because they are readily to hand, but there are other expressions in the cases, such as “concerted action” or “agreed on common action” which will serve just as well. The words are not to be construed as if they formed part of a statute. They all convey the same idea. This idea does not, as it seems to me, call for any finding that the secondary party has explicitly mapped out a plan with the primary offender. Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough if the parties combine to secure the doing of acts which in the event prove to be infringements.

Also, in such a context, knowledge of the patent would not be a prerequisite for a finding of infringement.

[207] Obviously, effective knowledge of the existence of a patent can be part of the overall circumstances one considers to determine whether or not a party deliberately induced another. In this case, Easton, after acquiring knowledge of the patent in December 2001, took no action to change its design or to make Rock Forest aware of the existence of such patent.

[208] Even more troubling is the fact that Easton’s Chinese supplier unilaterally decided to change the patterns used for Easton skate boots – adopting a two-piece quarter (see pattern B in P-14) sometime in 2003.[129] We do not know why Sakurai had decided to change the patterns, the answer given by Easton to an undertaking in that respect is given no weight as Easton never sought Sakurai’s explanation. Mr. Yang, who was initially scheduled to testify, could have shed some light on this issue. We know, however, that they reverted to the one-piece quarter in 2004.

[209] The Court concludes that in the very unique circumstances of this case, Easton is liable for infringing the ‘953 Patent in respect of all the skates manufactured at Rock Forest in accordance with Mr. Laferrière’s directions and specifications (pattern F in P-14).